1.7: Impact of the CJEU

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Law relating to trade marks, both substantive and procedural[1], has been almost completely harmonised by the TMD. Consequently, decisions of the CJEU are of central importance.[2]
A national court must interpret national law as far as possible in accordance with the requirements of Union law. If such a compliant application is not possible, the national court is obliged to apply EU law in full and to protect the rights that it grants to the individual by not applying, if necessary, any provision whose application in the specific case would lead to a result contrary to EU law. [3]
A decision of the CJEU that has been issued in the meantime even overrides the binding effect of a decision of a higher court on appeal.[4] While an appeal to the CJEU is permitted anyway against decisions of the EUIPO in connection with EU trade marks in the context of the appeal procedure - now after admission - the harmonisation of trade mark law is otherwise based on the obligation to refer by the national courts regulated in Art. 267 TFEU[5]. According to this provision, the CJEU decides on the interpretation of harmonised law upon referral by national courts.[6] However, according to the case law of the CJEU, this is not only the entire law relating to trade marks harmonised by the TMD, but also the international law prescribed by TRIPS and the Paris Convention.[7] Consequently, the CJEU may also have interpretative competence in connection with the law relating to trade marks or procedural rules, for example.
Any court of a Member State[8] - including a lower court,[9] but not the CJEU[10] - may refer questions of interpretation of harmonised law that arise in pending proceedings to the CJEU for a preliminary ruling. If such a question arises in proceedings before a court whose decisions - such as those of the Federal Court of Justice - can no longer be challenged by appeal under national law, that court is even obliged to refer the matter to the Court of Justice.
The obligation to refer always applies to courts of the highest instance if the question of interpretation is relevant to the decision. Exceptions to this only apply under certain narrow conditions, namely

  • if the relevant provision of EU law has already been the subject of an interpretation by the Court of Justice,

  • if there is already established case law of the Court of Justice that has resolved the legal question in question - even if the questions at issue are not completely identical,

  • if the correct application of EU law is so obvious that there is no room for reasonable doubt (acte claire doctrine);

whether such a case exists must be assessed in the light of the specific characteristics of EU law, the particular difficulties of its interpretation and the risk of divergent judicial decisions within the EU; however, the national court may refrain from making a reference only if it is satisfied that the courts of the other Member States and the Court of Justice would be equally certain.[11]
For the national courts of highest instance, in Germany in particular the Federal Court of Justice, this global obligation to refer means a severe restriction of their decision-making powers. This is probably one of the reasons why the courts tend to handle the obligation to refer rather restrictively.
For example, the BGH has often refrained from giving reasons for not making a referral or has argued that the 'correct' interpretation does not give rise to any reasonable doubt. Later, however, the CJEU has almost as often decided the legal question in the opposite direction.[12]
Decisions that disregard the obligation to refer in this way and thus deprive the parties of the CJEU as a statutory judge, in Germany, can theoretically be appealed to the BVerfG under certain circumstances; in fact, however, the hurdles of the BVerfG are high, so that a constitutional complaint will only be successful in exceptional cases.[13] However, there is some evidence to suggest that the violation of the obligation to refer can also be considered a violation of the right to a fair trial under Art. 6 ECHR and can be challenged at the European Court of Human Rights (ECtHR). In capable cases, another approach may be to assert claims for official liability against the national court;[14] this is facilitated by the fact that, according to the case law of the CJEU, the judge's privilege does not apply when applying European legal norms, meaning that the judge (or the Member State) is liable for any simple fault, including simple negligence.[15]

Footnotes

  1. Procedural law was still different before the TMD of 2015 - see CJEU C-246/05 of 14 June 2007 Häupl, ref. 26 ff.

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  2. On case law, see Hildebrandt, Harmonised Trade Mark Law in Europe, 2nd ed. 2008; Hildebrandt, Trade Mark Law in Europe, 4rd ed. 2023.

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  3. For example CJEU C-115/08 of 27 October 2009 Land Oberösterreich, ref. 138, with further references.

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  4. BGH I ZB 86/05 of 5.10.2006 Colour mark yellow/green II, ref. 11 f.

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  5. Previously Art. 234 EC.

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  6. It is not uncommon for the CJEU to reformulate the question if it considers a different question to be relevant.

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  7. See CJEU C-245/02 of 16 November 2004 Anheuser-Busch/Budějovický Budvar, ref. 41; also CJEU C-53/96 of 16 June 1998 Hermès International/FHT Marketing Choice BV, ref. 29; CJEU C-89/99 of 13 September 2001 Schieving-Nijstad/Robert Groeneveld, ref. 30; imprecisely Ullmann, Die bösgläubige Markenanmeldung und die Marke des Agenten, GRUR 2009, 364, 368.

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  8. The court in this sense is also the Supreme Patent and Trade Mark Senate in Austria: CJEU C-246/05 of 14 June 2007 Häupl, ref. 21; the court is not the Czech Úřad průmyslového vlastnictví: CJEU C-49/13 of 14 November 2013 MF 7, ref. 25.

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  9. On the obligation to refer of a lower court due to a reduction of discretion to zero, see the Opinion of Advocate General Ruiz Jarabo in proceedings C-206/04 P Muelhens of 10 November 2005, ref. 58; on the right of referral of the ‘appointed person’ in UK law CJEU C-259/04 of 30 March 2006 Emanuel, ref. 18 ff.

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  10. GC T-71/17 of 26 June 2018 France/FRANCE.com, ref. 19 ff.

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  11. CJEU 283/81 of 6 October 1982 CILFIT, ref. 11 ff.

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  12. See, for example, with regard to the trade circles for prescription-only medicinal products, on the one hand CJEU C-412/05 P of 26 April 2007 Alcon (II), ref. 56 ff.; on the other hand BGH GRUR 1997, 629, 632 Sermion II; BGH GRUR 1998, 815, 817 Nitrangin; BGH GRUR 1999, 587, 589 Cefallone, with further references; BGH GRUR 2000, 587, 589 Cefallone, with further references. N.; BGH GRUR 2000, 603, 604 f. Ketof/ETOP; on the colour combination mark, on the one hand CJEU C-49/02 of 24.6.2004 Heidelberger Bauchemie, ref. 33 f.; on the other hand BGH GRUR 1999, 730, 731 magenta/grey colour mark; BGH GRUR 2002, 427 yellow/green colour mark; on the relationship between the grounds for refusal, on the one hand CJEU C-363/99 of 12 February 2004 Postkantoor, ref. 86; CJEU C-265/00 of 12 February 2004 Campina Melkunie, ref. 19; on the other hand BGH GRUR 1993, 43 Römigberg; BGH GRUR 2004, 329, 331 Käse in Blütenform I; BGH GRUR 2004, 502, 504 f. Gabelstapler II; BGH GRUR 2004, 506, 507 Stabtaschenlampen II; on the consideration of the public interest in keeping the mark free in the examination of distinctiveness on the one hand CJEU C-104/01 v. 6. 5.2003 Libertel, ref. 60 and 71; CJEU C-456/01 P and C-457/01 P of 29.4.2004 Dreidimensionale Tablettenform I, ref. 47; CJEU C-49/02 of 24.6.2004 Heidelberger Bauchemie, ref. 41; CJEU C-329/02 P of 16.9.2004 SAT.2 ; CJEU C-37/03 P v. 15.9.2005 BioID, ref. 60; on the other hand BGH GRUR 2000, 231, 232 FÜNFER; BGH GRUR 2000, 722 LOGO; BGH GRUR 2001, 1154, 1155 Farbmarke violettfarben; BGH GRUR 2002, 64, 65 INDIVIDUELLE; on ambiguous terms on the one hand CJEU C-191/01 P v. 23 October 2003 Doublemint, ref. 32 ff.; on the other hand BGH GRUR 2001, 162, 163 RATIONAL SOFTWARE CORPORATION; on the significance of distinctive uses on the one hand CJEU C-307/11 P v. 26.4.2012 Deichmann, ref. 55; on the other hand BGH GRUR 2001, 240, 242 SWISS ARMY; BGH I ZB 21/06 of 24.4.2008 Marlene-Dietrich-Bildnis I; BGH I ZB 62/09 of 31.3. 2010 Marlene-Dietrich-Bildnis II, ref. 19; BGH I ZB 115/08 of 24 June 2010 TOOOR!; on form-related trade marks, on the one hand CJEU C-205/13 of 18 September 2014 Hauck/Stokke, ref. 21 et seq, on the other hand BGH I ZB 22/04 of 25 October 2007 Milchschnitte, ref. 13 et seq.; BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 14 et seq.; on the burden of proof in invalidity proceedings following market penetration on the one hand CJEU C-217/13 of 19 June 2014 Oberbank, ref. 62 et seq.; on the other hand BGH I ZB 48/07 of 23 October 2008 POST II, ref. 31; BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 48; BGH I ZB 65/12 of 17 October 2013 test, ref. 38; BGH I ZB 59/12 of 6 November 2013 Smartbook; on ‘trademark-like’ use on the well-known trade marks, on the one hand CJEU C-48/05 of 25 January 2007 Adam Opel, ref. 37; CJEU C-487/07 of 18 June 2009 L'Oréal and others, ref. 58 et seq.; on the other hand BGH GRUR 2005, 583 Lila-Postkarte; on the attack from trade marks against company signs on the one hand CJEU C-17/06 of 11 September 2007 Céline, ref. 21 et seq.; on the other hand BGH GRUR 2004, 512, 513 et seq. Leysieffer, m. w. w. N.; BGH GRUR 2005, 871, 872 Seicom; on the relevant point in time for the assessment of distinctiveness, on the one hand CJEU C-145/05 of 27 April 2006 Levi Strauss, ref. 13 ff.; on the other hand BGHZ 156, 112, 125 Kinder I; BGH GRUR 2003, 1044, 1045 Kelly; on the likelihood of confusion without being characterised by a component, on the one hand CJEU C-120/04 of 6 October 2005 Medion, ref. 6 October 2005 Medion, ref. 30 et seq.; on the other hand, for example, BGH I ZB 40/03 of 22 September 2005 coccodrillo, ref. 19; on the likelihood of confusion with trade mark families, on the one hand CJEU C-234/06 P of 13 September 2007 Il Ponte Finanziaria, ref. 62 et seq.; on the other hand BGHZ 131, 122, 127 Innovadiclophlont, m. w. w.; BGH GRUR 1996, 122, 127 Innovadiclophlont, m. w. n.; BGH GRUR 1996, 122, 127 Innovadiclophlont, m. w. n.; BGH GRUR 1996, 122, 122, 127 Innovadiclophlont, m. w. n.; BGH GRUR 1996, 122, 122, 127 Innovadiclophlont, m. w. n. N.; BGH GRUR 1996, 267, 269 AQUA, w. w. N.; BGH GRUR 1996, 777, 778 JOY; BGH GRUR 1998, 927, 929 COMPO-SANA; BGH GRUR 2002, 542, 544 BIG; on product similarity, on the one hand CJEU C-39/97 of 29 September 1998 Canon, ref. 23; on the other hand BGHZ 138, 349, 351 MAC Dog; BGH GRUR 1995, 216 Oxygenol II; BGH GRUR 1997, 221 Canon; BGH GRUR 1998, 925 Bisotherm-Stein; BGH GRUR 1998, 932, 934 MEISTERBRAND; BGH GRUR 1999, 158 GARIBALDI; BGH GRUR 1999, 164 JOHN LOBB; BGH GRUR 1999, 245 LIBERO; on the protection of well-known marks on the one hand CJEU C-125/14 v. 3.9.2015 Iron & Smith, ref. 34; on the other hand BGH I ZR 214/11 of 11 April 2013 VOLKSWAGEN/Volks.Inspektion, ref. 67; on the right of persons with the same name, on the one hand CJEU C-245/02 of 16.11.2004 Anheuser-Busch, ref. 77 ff.; CJEU C-17/06 of 11.9.2007 Céline, ref. 30 ff.; on the other hand BGH GRUR 2002, 706, 707 vossius.de; on exhaustion for advertising materials, on the one hand CJEU C-127/09 of 3.6.2010 Coty Prestige Lancaster Group; on the other hand BGH I ZR 63/04 of 15.2. 2007 Parfümtester; on legitimate reasons for non-use on the one hand CJEU C-246/05 of 14 June 2007 Häupl, ref. 53; on the other hand BGH GRUR 1997, 747, 749 Cirkulin; on rights-preserving use in a modified form on the one hand CJEU C-234/06 P of 13 September 2007 Il Ponte Finanziaria, ref. 86; on the other hand BGH GRUR 1999, 54 f. Holtkamp; BGH GRUR 2000, 1040, 1041 FRENORM/FRENON; BGH GRUR 2002, 167, 168 Bit/Bud; on advertising for product imitations on the one hand CJEU C-487/07 of 18 June 2009 L'Oréal and others, ref. 75; on the other hand BGH I ZR 169/04 of 6 December 2007 Imitationswerbung; BGH I ZR 184/05 of 6 December 2007 Duftvergleich mit Markenparfüm.

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  13. See BVerfG GRUR 2005, 52 Incomplete CJEU case law; successful, however, BVerfG 2 BvR 221/11 of 15 December 2016; see also BGH I ZB 53/08 of 20 May 2009 Schuhverzierung, ref. 27; BGH I ZB 107/08 of 20 May 2009 Vierlindenden , ref. 27. 20 May 2009 Vierlinden, ref. 11; I ZB 12/10 of 28 October 2010, ref. 9; I ZB 13/10 of 28 October 2010, ref. 8; I ZB 14/10 of 28 October 2010, ref. 8; I ZB 85/11 of 6 February 2013 Variable Bildmarke, ref. 17.

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  14. CJEU C-681/13 of 16 July 2015 Diageo Brands, ref. 66, with further references.

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  15. CJEU C-173/03 of 13 June 2006 Traghetti del Mediterraneo.

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